Ex Parte Lerner et al

Patent Trial and Appeal BoardJun 1, 2017

12842033 (P.T.A.B. Jun. 1, 2017)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/842,033 07/23/2010 Gregory Lerner TI-68349 3271 23494 7590 06/05/2017 TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, M/S 3999 DALLAS, TX 75265 EXAMINER VARNDELL, ROSS E ART UNIT PAPER NUMBER 2631 NOTIFICATION DATE DELIVERY MODE 06/05/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): uspto@ti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY LERNER, NIR EJ TAL, RONEN SHAUL ISAAC, and ROI FAUST Appeal 2014-006892 Application 12/842,033 Technology Center 2600 Before MAHSHID D. SAADAT, MONICA S. ULLAGADDI, and MATTHEW J. McNEILL, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the August 02, 2016, Decision on Appeal (“Decision”), wherein we affirmed the rejection of claims 1—15 under 35 U.S.C. § 103(a). We have reconsidered the Decision in light of Appellants’ arguments but, for the reasons given below, we are not persuaded any points were misapprehended or overlooked by the Board in our Decision. Appeal 2014-006892 Application 12/842,033 ANALYSIS Claims 1—8 Appellants contend the Board erred in affirming the rejection of claims 1—8 under 35 U.S.C. § 103(a) by failing to consider Appellants’ argument that “there is no reason for one of ordinary skill in the art to combine Banh and Petrick because Petrick’s use of SISO mode teaches against combining such mode with the MIMO mode of Bank'1'’ (Req. Reh’g 2 (citing Reply Br. 9)). First, this argument however is entitled to no consideration because it was first presented in the Reply Brief (see Reply Br. 4), not the opening brief, and Appellants have not shown good cause why it should be considered, as required by our procedural rule. See 37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative opinion) (absent a showing of good cause, the Board is not required to address an argument presented in the reply brief that could have been presented in the principal brief on appeal). Second, even assuming arguendo that this argument was raised timely, the Decision included an explanation as to why the argument is not persuasive of error in the Examiner’s rejection, as follows: Each reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not. . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); see also In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Banh teaches both MIMO and SISO modes of operation which is modified by Petrick’s base band processor and SISO 2 Appeal 2014-006892 Application 12/842,033 mode of operation where both the first and second signal processing chains receive the same input modulated signal, as recited in claim 1 (see Banh 126, Petrick col. 5,11. 5—30). (See Decision 4) (emphasis added). Accordingly, we are unpersuaded that our Decision did not consider the teachings of Petrick1 or Appellants’ argument that Petrick teaches away from the combination. Claims 9—11 and 14 Appellants contend the Board erred in considering the disclosure in paragraphs 13 and 14 of Takeda2 because such disclosure is directed to PA optimization (Req. Reh’g 8), whereas in the Brief Appellants argued that “there is no ‘optimizing of power amplifier (PA) efficiency’ as suggested by [the] Examiner” (Reply Br. 10). We are not persuaded by Appellants’ contentions. In paragraph 14, Takeda discloses: In order to achieve the object stated above, the radio frequency module according to the invention is realized by modularizing the above-described radio frequency circuit apparatus according to the invention into a single component. When the radio frequency module according to the invention performs SISO communication, the transmit signal is inputted only to the first PA, and in the case of MIMO communication, the transmit signal is inputted to the first and second PAs. Therefore, instead of “PA optimization” or concern as to whether there is an “efficiency drop” in the first PA as Appellants contend, Takeda is concerned with optimizing overall PA efficiency in the radio frequency module when both SISO and MIMO communications are allowed. The portion of 1 Petrick, US 5,712,870; Jan 27, 1998. 2 Takeda, US 2006/0250182 Al: Nov. 9, 2006. 3 Appeal 2014-006892 Application 12/842,033 paragraph 13 cited by Appellants that discusses “efficiency drop” (Reply Br. 10) is in fact an explanation of how “[t]his results in an efficiency drop of the first PA, that the efficiency of the second PA does not drop, resulting in a restraint on the overall efficiency drop of PAs.” That is, the efficiency drop of PAs is restrained or limited which means that the overall efficiency of the radio frequency module is improved or optimized. As further cited by the Examiner (Ans. 5—7), paragraph 100 and Figure 26 B of Takeda explains the functional block of the circuit configuration of a radio frequency module that includes both MIMO and SISO communications. Accordingly, we are unpersuaded that our Decision misapprehended the disclosure of Takeda in affirming the rejection of claims 9—11 and 14. DECISION For the reasons stated above, Appellants have not persuaded us that we misapprehended or overlooked any issue of fact or law in our Decision. We have granted Appellants’ Request for Rehearing to the extent that we have reconsidered our Decision dated August 02, 2016, but we deny Appellants’ request to make any changes therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). REHEARING DENIED 4